The Complainant is The Estate of Jim Morrison, a/k/a Lou and Pearl Courson, of Santa Monica, California, United States of America, represented by Keats McFarland & Wilson, LLP, United States.
The Respondent is Rick Sentieri, Communication Services Group, of Kenosha, Wisconsin, United States.
The disputed domain name <jimmorrison.com> (the “Domain Name”) is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2009. On March 13, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Name. On March 13, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2009. A reply was filed with the Center on April 6, 2009.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on April 17, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On May 7, 2009, the Center issued Procedural Order No. 1 to the parties on the Panel's behalf. In the Order, the Panel stated that the evidence annexed to the Complaint did not seem to unequivocally support Complainant's assertion of common law rights in the mark JIM MORRISON and requested that Complainant provide further evidence supporting the rights asserted. Complainant did so by way of its Supplemental Statement on May 8, 2009. The Order invited Respondent to send documents and/or comments in response to Complainant's supplemental submission by May 15, 2009. Respondent failed to respond.
Complainant is the Estate of Jim Morrison. Jim Morrison was the lead singer of the rock band The Doors before his death in 1971. The music of JIM MORRISON and The Doors and other recordings by Jim Morrison (discussed below) have been available to the public beginning around the mid-1960's. For example, the album “An American Prayer” released in 1978 and available today features vocals by Jim Morrison and music by The Doors and it bears the JIM MORRISON mark on its cover. Complainant's Supplemental Statement annexes information about other musical recordings featuring by name the vocals of Jim Morrison with music by The Doors. The Supplemental Statement also provides information from Neilson SoundScan Title Reports setting forth the substantial numbers of sales to date of recordings sold in the United States identifying Jim Morrison by name as the artist.
Jim Morrison was also an author of works (e.g., poetry, screenplay) such as: “Wilderness: The Lost Writings of Jim Morrison, Volume I” and “The American Night: The Writings of Jim Morrison Volume 2.” The album “Ultimate Collected Spoken Word” released in 1997 contains spoken poetry by Jim Morrison and bears the JIM MORRISON mark on its cover. After Jim Morrison's death, his estate contributed to a book entitled “The Jim Morrison Scrapbook” which includes Jim Morrison's handwritten lyrics, poems, letters, photos and an audio CD including Jim Morrison reciting poetry and telling stories. The JIM MORRISON mark has also been used in connection with an audio CD of interview tapes with Jim Morrison entitled: “The Doors: The Lost Interview Tapes Featuring Jim Morrison, Volume Two.” The interviews were taped in 1967 and 1970.
The JIM MORRISON mark has also been used on and in conjunction with the sale of T-Shirts, posters, action figures, wallets and patches.
Complainant owns the rights to use Jim Morrison's name pursuant to Section 3344.1 of California Civil Code. Complainant does not own a trademark registration for, or have an application on file to register, “JIM MORRISON.”
On October 13, 2008 and again on November 7, 2008, Counsel of record here for Complainant wrote a cease and desist letter to Respondent on behalf of “the Doors Music, The Doors, and the successors to the estate of Jim Morrison”. There is no response of record to those letters.
Respondent refers to himself as “Rick Sentieri aka Jim Morrison.” He registered the Domain Name on March 1, 1997, twelve years ago. Respondent uses the Domain Name to operate a web site which sells posters of entertainers (including Jim Morrison and The Doors), and it advertises and sells other merchandise and services for third parties through links. Respondent's (sole) reply of April 6, 2009 was an email having as the Subject Line: “please leave me alone you are making me sick and very unhappy.” The e-mail included a poem Respondent allegedly wrote and the following message:
“I have received your letter that has print outs of my web site, <jimmorrison.com>. Your organization has violated my webpage disclaimer. You must have written permission to produce copies of my web page. Please read disclaimer on the bottom of the <jimmorrison.com> (JIMMORRISON.COM 1996-2009 trademark of Rick Sentieri aka JIM MORRISON) Rick Sentieri aka Jim Morrison is a published author and singer who LIVES in Kenosha Wisconsin. His Jim Morrison.com videos have been downloaded THIS YEAR, over two hundred thousands times. Rick Sentieri aka Jim Morrison's poetry is the best ever written. Potentially a Nobel Peace Prize winner. His poetry can be downloaded (some with his OWN voce reading his poems) here: http://jimmorrison.com/love.htm.”
Complainant alleges it has succeeded Jim Morrison in his rights to his name and has standing to sue to enforce those rights. Complainant claims those rights include common law trademark rights in the name “Jim Morrison” (hereinafter, “the Mark”). According to Complainant, goods and services (e.g., clothing, posters, and books) continue to be sold using the Mark including on the Internet. Furthermore, Complainant alleges the Mark has been commercially exploited for decades and it acquired secondary meaning in the marketplace decades ago. Complainant admits it does not own a federal trademark registration for the Mark, but submits such a registration is not necessary because “there is a long history of Complainant's common law rights in and to the mark JIM MORRISON”.
Complainant claims it recently became aware of Respondent's use of the Domain Name. It contends that through continuous and longstanding use of the Mark since 1966, Complainant has acquired rights to the Mark which is identical to the Domain Name <jimmorrison.com>. Complainant has not given Respondent rights to the Mark and claims Respondent does not have any rights or legitimate interests in the Domain Name (e.g., through any bona fide offering of goods or services, making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain). According to Complainant, use of the Mark began in 1966 and Respondent did not register the Domain Name until 1997. By 1997, however, Complainant asserts the Mark had for decades acquired secondary meaning as a trademark in the marketplace and worldwide fame that Respondent would have known about before registering the Domain Name. In this regard, Complainant points out that Respondent is selling Jim Morrison posters on its website, thus evidencing Respondent's bad faith registration and use of the Domain Name. Respondent's use of the Name identically and the fact that Respondent ignored Complainant's cease and desist letters is further evidence of bad faith, according to Complainant.
In addition to the above-quoted portion of Respondent's email which does not substantively respond to the Complaint, Respondent claims that “<jimmorrison.com> is a trademark of Rick Sentieri” and has been copyrighted from 1996-2009.
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
This element consists of two parts: first, does Complainant have rights in a relevant mark (here the personal name of Jim Morrison) and, second, is the Domain Name identical or confusingly similar to that mark. Failure to demonstrate rights in a trademark would be fatal to a complainant's case.
Complainant acknowledges it does not have a United States federal trademark registration for “Jim Morrison”. Complainant is admittedly relying on common law rights in “Jim Morrison” that it claims were established decades ago.
On September 3, 2001, WIPO issued its Final Report on the Second WIPO Domain Name Process (the “Second WIPO Report”). See, e.g., The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net and God.info, WIPO Case No. D2002-0184 (June 3, 2002). In that report, WIPO carefully considered to what degree protection should be extended inter alia to personal names. In its recommendations, WIPO clearly indicated that the Policy should be limited to personal names that had been commercially exploited. “Persons who have gained eminence and respect, but who have not profited from their reputation in commerce, may not avail themselves of the UDRP to protect their personal names against parasitic registrations.” Second WIPO Report, paragraph 199. The consensus of prior UDRP panels has reflected this same view. “While the UDRP does not specifically protect personal names, in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”) (emphasis added), paragraph 1.6 - Consensus view. Merely having a famous name […] is not necessarily sufficient to establish unregistered trademark rights. Id. The name in question should be actually used in trade or commerce. Id.; See also, 5 J.T. McCarthy , McCarthy on Trademarks and Unfair Competition, § 28: 11 at 28-15 (2007) (“[W]hile every person inherently possesses a right of publicity, every person does not inherently possess a trade or service mark in his or her name, picture, or other elements of persona. Trade or service mark rights arise only if a name or picture is used as a trade or service mark: to identify and distinguish the source of goods or services. To acquire enforceable trade or service mark rights in a personal name, likeness, or any type of symbol, that word or symbol must be used as a trade or service mark.” (Footnotes omitted.).
With this clear guidance, the Panel must focus on the evidence Complainant has made of record to demonstrate the use of “Jim Morrison” in trade or commerce, for example in conjunction with music, clothing, posters and books. As support for its assertions of common law usage, Complainant provided copies of selected website pages (see “www.the doors.com” and “thedoors.shop.musictoday.com”) and the Panel visited the actual website and website pages. The Panel found this evidence somewhat of a mixed bag in that it seemed to demonstrate unequivocally rights in the mark “The Doors” more so than the mark JIM MORRISON. For example, the domain name itself is <the doors.com> (Jim Morrison is not mentioned), the copyright notice is under the name “Doors Music Company,” and according to the “Copyright Policy” for the website, the trademark and service marks that the company acknowledges relate to “The Doors”, not “Jim Morrison” (“The Doors Trademark and Service Mark are the property of the Company.”). The “Terms and Conditions” reflect the same message.
Furthermore, much of the music, clothing, posters and books that can be purchased by way of “www.thedoors.shop.musictoday.com” are not being sold using “Jim Morrison”, rather, they are sold under “The Doors”. Two posters are offered for sale on the site. One poster relates to a film about THE DOORS called “When You are Strange”. An image of The Doors is on the poster, but Jim Morrison's name is not on the poster, “The Doors” name is. The other poster features prominently what appears to be the image of a winged human, again with the text: “The Doors”. The clothing offered for sale is T-shirts. Most of the T-shirts have some image of The Doors (photograph, silhouette, caricature) and “The Doors” mark is prominently displayed. None of the T-shirts has the name Jim Morrison on them, nor do any of the product descriptions refer to Jim Morrison. Notwithstanding this, the Panel believed that Complainant presented some basis for its assertions of common law usage of JIM MORRISON and, thus, requested supplemental evidence as unequivocal confirmation. That it received in the Complaint's Supplemental Statement and relevant annexes all of which is discussed above in the Factual Background. Thus, the Panel concludes that Complainant has established common law rights in JIM MORRISON.
As prior panels have recognized, the incorporation of a trademark in its entirety in a domain name is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark for purposes of the Policy. Insofar as the Domain Name <jimmorrison.com> incorporates verbatim the Mark (JIM MORRISON), in which Complainant has rights, the Panel finds the Domain Name is identical to the Mark. When comparing a challenged domain name and a trademark, the addition of the “.com” suffix is irrelevant for the purpose of determining whether the domain name is identical or confusingly similar to a trademark. Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
Complainant must prove Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant makes a prima facie showing that a respondent has no rights or legitimate interests in a domain name, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with Complainant. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, “[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant's uncontested facts establish: (1) Complainant has not licensed or otherwise permitted Respondent to use the Mark in any manner including as a domain name; (2) Respondent has not used nor did he prepare to use the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services (the Panel finds Respondent's use of the Domain Name takes unfair advantage of the Mark); (3) Respondent has not been and is not commonly known by the Domain Name (it appears Respondent is known by Rick Sentieri, Communication Services Group); and (4) Respondent is not making a legitimate noncommercial or fair use of the Domain name (it appears from the evidence of record that Respondent is commercially benefiting from registering the Domain Name through its use of affiliate marketing services and by selling competing goods and services).
Once prima facie evidence has been adduced, as in the present case, it is then incumbent upon the Respondent to rebut the Complainant's evidence. In this case, Respondent's reply failed to respond to Complainant's evidence, thus the Panel finds that the Complainant's facts are to be taken as proven.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.”
The Panel concludes that Respondent registered and is using the Domain Name in bad faith. Complainant has established the Domain Name is identical to Complainant's JIM MORRISON mark and that Respondent has no rights or legitimate interests in the Domain Name. Over thirty years after Jim Morrison began using his name as a singer, and after Jim Morrison's fame as a rock star, song writer and poet were established, Respondent registered the infringing Domain Name. Indeed, Respondent has been using the Domain Name to sell the products and services of third parties and products bearing the JIM MORRISON mark that compete with Complainant's products. These activities are in violation of paragraphs 4(b)(iii) and (iv) of the Policy.
The Panel further notes that even after Complainant's counsel informed Respondent of its rights to the JIM MORRISON mark, Respondent refused to stop using the Domain Name or transfer it to Complainant.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <jimmorrison.com> be transferred to Complainant.
Harrie R. Samaras
Dated: March 25, 2009